194 F. 91 | 1st Cir. | 1911
Lead Opinion
This is a proceeding under section 4915 of the Revised Statutes (U. S. Comp. St. 1901, p. 3392), amended as hereinafter set out. The section has been so fully stated or abstracted in the decisions to which we will refer that we do not deem it necessary to recite it here. We will describe the parties as Greenwood and Dover. The patent issued to Greenwood, and Dover filed a bill in equity under section 4915 in the Circuit Court, and there prevailed, and Greenwood appealed to us. Dover claims that the proceeding in the Circuit Court was in no way in the nature of an appeal, but an independent suit in equity, as to which proposition there is no doubt.
“It is an application to the court to set aside the action of one of the executive departments of the government.”
The opinion concludes at page 129 of 153 U. S., at page 775 of 14 Sup. Ct. (38 L. Ed. 657), as follows:
“There is other testimony on both sides of this controversy. It is unnecessary to notice' it in detail. It is enough to say that the testimony as a whole is not of a character or sufficient to produce a clear conviction that the Patent Office made a mistake in awarding priority of the invention to the defendant; and because of that fact, and because of the rule that controls suits of this kind in the courts, * * * we remand the case with instructions to dismiss the bill.”
Therefore any suggestion that any proceeding of the kind now before us, whether it includes the testimony used in the Patent Office or not, and whether it includes it with or without other testimony or not, is differentiated from an ordinary suit in equity, is immaterial.
The patent in controversy was issued on June 28, 1904, to Thomas F. Greenwood, assignor, on an application filed on February 1, 1902. There are several claims. The only ones to which we need refer to are 1, 2, and 3, reading as follows:
*93 “1. A pin-tongue having one end bent over, said bent end being provided with a substantially cylindrical bore or aperture, and a pivot-pin secured in said bore or aperture by pressure.
“2. A pin-tongue having one end provided with a bend, and a pivot-pin secured 'in said bend solely by pressure.
“3. 'a pin-tongue having one end provided with a bend, and a pivot-pin secured in said bend by spring-pressure.”
The apparent differences are that claim 1 ends with the words “by pressure,” claim 2 with the words “solely by pressure,” and claim 3, “by spring pressure.” In either case the pin-tongue revolves through a part of a circle with what is called the pivot-pin, to which it is firmly secured by pressure, described in Claim 3 as “spring-pressure.” The main purpose seems to have been to accomplish a simple and inexpensive contrivance, and the pith of the invention to secure the end of the pivot-pin around the pivot, or pindle, so that the pin and pindle would turn together, and so that the pin would be held in place by its resiliency alone, or what is called in the patent “spring-pressure.”
Dover filed an application for the same invention on September 11, 1901, thus preceding by several months the date of Greenwood’s application. On April 15, 1902, an interference was declared between Greenwood and Dover; and the Examiner of Interferences found in favor of Greenwood. On appeal to the board of examiners this was reversed, and its decision was sustained by the commissioner, who awarded priority to Dover. Thereupon an appeal was taken to the Court of Appeals of the District of Columbia, according to the following statutes:
Section 780 of the Revised Statutes of the District of Columbia, approved June 22, 1874, reads as follows:
“See. 780. Tbe Supreme Court, sitting in banc, shall have jurisdiction of and shall hear and determine all appeals from ihe decisions of the Commissioner o£ Patents, in accordance with the provisions of sections forty-nine hundred and eleven to section forty-nine hundred and fifteen, inclusive, of chapter one, Title LX, of the Revised Statutes, ‘Patents, Trade-Marks and Copy-Rights.’ ”
Section 9 of the act approved February 9, 1893 (chapter 74, 27 Stat. 434), reads as follows:
“Sec. 9. That the determination of appeals from the decision of the Commissioner of Patents, now vested in the general term of the Supreme Court of the District of Columbia, in pursuance of the provisions of section seven hundred and eighty of -the Revised Statutes of the United States, relating to tire District of Columbia, shall hereafter be and Ihe same is hereby vested in the Court of Appeals created by this act; and in addition, any party aggrieved by a decision of the Commissioner of Patents in any interference case may appeal therefrom to said Court of Appeals.” U. S. Comp. St. 1901, p. 3391.
The Revised Statutes of 1874 excluded from the jurisdiction of the Supreme Court of the District of Columbia the decisions of the commissioner in interference cases; but this jurisdiction was given to the Court of Appeals by the act of February 9, 1893, which we have just quoted. It never has been disputed that the proceeding as under section 4915 applies to interference cases which come up to the Court of Appeals of the District of Columbia equally with those pro
The opinion in the Court of Appeals for the District of Columbia is found in 23 App. D. C., at page 251, decided March 1, 1904. With reference to the effect of this decision, and with reference to the question of introducing any part of the record in the Patent Office to which it related, and with reference to all questions of that character, the views Of the Circuit Court were clearly correct, and we need not go over them. Nevertheless, it will be permissible for us to refer to some expressions of the Court of Appeals, and also to the proceedings in the Patent Office, for the purpose of illustrating propositions which we may find it desirable to state.
It is to be regretted that Congress has not provided that decisions like that in the Court of Appeals in Greenwood v. Dover should be conclusive, in the same way in which any decisions of the superior courts of federal or state jurisdiction are ordinarily held to be effectual. While the proceedings in the Patent Office out of which this decision arose were not strictly in accordance with the practice either at law or in equity in the jurisdictions where the common law prevails, yet they have all the elements of the fundamental principles of the “law of the land," and might well have been pronounced by Congress to end the litigation accordingly, and thus to avoid the opportunity of further holding up of patents, and of leaving the rights of both the public and the patentee indecisive for another series of years. The entire proceeding contains the great elements required by the “law of the land,” namely, opportunity for both parties to be heard, and finally a decision by a court of high authority, endowed with all the machinery of superior courts of judicature. As it is, however, we are compelled to accept in this single particular the view claimed by D'over, that the judgment of the Court of Appeals stands akin to a departmental decision, although no court could avoid the impression that in a certain sense and to a certain extent it is of greater weight. It is sufficient for us, however, to apply to this case the rule of Morgan v. Daniels, that there must be a clear conviction on this record that the conclusion of the Court of Appeals was erroneous. In saying this we need not trouble ourselves about the varying- expressions of various courts with regard to analogous cases, some of which would even require Dover to maintain his position by proofs beyond a reasonable doubt. We are satisfied to reduce all such expressions to the one used in Morgan v. Daniels, to the extent that the record in this case should establish by a clear conviction that Dover is entitled to maintain his bill.
In like manner, we may refer, in further illustration, to the evidence of Greenwood now missing. If the respondent here was unable to produce Greenwood after the lapse of several years, it only leads to the importance of adhering to the rule of Morgan v. Daniels, ubi supra, because especially af the possible loss of important testimony during the lapse of a period extending over several years.
The general rule given as to this class of testimony is stated in Morgan v. Daniels, at page 129 of 153 U. S., at page 772 of 14 Sup. Ct. (38 L. Ed. 657), where an attempt was made to fix a time by reference to a particular conversation, and to rough sketches, with a comment by the court that it is not probable that, in the absence of some special reason therefor, the memory would carry for 'eight or nine years ’ details of a plan or idea suggested in conversations and illustrated by sketches such as the court described. The opinion adds that such testimony is not of a character to carry great weight.
' In Brooks v. Sacks, opinion passed down by us on June 10, 1897, 81 Fed. 403, 26 C. C. A. 456, the classes of new evidence produced on this bill pro and con, with reference to satisfying the demand for a clear conviction as against a departmental adjudication such as we have here, are carefully analyzed and valued. In that case there were two ¡patents for-the same invention, and the issue was simply one of priority as between them. As to one patent there was an admission of a date of invention earlier than the date of the application; and, of course, the presumption in favor of that patent went back to the admitted date, and to anticipate that date required the same weight of evidence as it would to anticipate the date of the application. Therefore, although the circumstances are different, the conclusions there are a guide for us here. There, there were certain drawings, as at bar, and also some testimony fixing the date as claimed by the contesting patentee. It was admitted that the illustrations might well have included the device in controversy, and there were some other suggestions tending to strengthen the case of the contestant. Our conclu
“On the whole, we must apply to this case the practical safeguards against the frequently mistaken memory of witnessed as to events of tills character long since happening, which the courts are always insisting on with reference to the issue of anticipation. Doing this, it seems plain that the complainant below has come far short of proving his prior right as satisfactorily as required by the authorities and by the reason of the case. Indeed, in view of the absolute lack of illustrations, book entries, purchasers, bills, patterns, or castings of the early date in dispute, we are safe in saying that the preponderance of probabilities is against him.”
Westinghouse Company v. Stanley, decided by us on December 9, 1904, 133 Fed. 167, 179, 68 C. C. A. 523, was peculiar. On first sight it might be considered as contravening Brooks v. Sacks, but Brooks v. Sacks was cited and approved. The distinction grew out of the fact that the crucial date was fixed by the record of tbe solicitor, who had been continuously employed during the entire controversy; so that, inasmuch as he had a continuous interest in the device from the beginning, and a continuous record in reference thereto, his testimony was accepted.
Applying, therefore, the rules which we have cited, in accordance with the light which we receive with regard to their practical application from these decisions, it is plain that Dover has failed to meet the presumption against him arising from the decision of the Court of Appeals of the District of Columbia; and, indeed, it might be said that this record as an independent record is more against him than for him.
The decree of the Circuit Court is reversed; and the case is remanded to that court with directions to dismiss the bill, with costs for the respondents in that court and on appeal.
Concurrence Opinion
I fully concur in the result of the foregoing opinion, but should prefer to see the decision in this case based distinctly upon the theory that the remedy by bill in equity provided by section 4915, when sought in a situation involving intervention rights, and a decision by the Court of Appeals of the District of Columbia, a court having appellate jurisdiction over certain intervention patent rights and proceedings, should be administered according to the due and ordinary course of equity practice and procedure; and upon the idea, where questions of fact have been determined and established by such a court of competent jurisdiction, in an inter partes case, that the results of the decision will not be overthrown except upon such grounds as relief is granted from judgments at law and decrees in equity, under the broad sense in which equity and common-law jurisdictions are understood in this country and in England.
While it was doubtless intended to provide an independent proceeding in equity, under the well-understood historical view and the thousands of judicial interpretations which accept the law and equity terms in the Constitution, the judiciary act, and other enactments of Congress with reference to law and equity proceedings as meaning
On the contrary, Congress in providing remedy in patent cases by bill in equity on notice to adverse parties and upon “other due proceedings” must have intended proceedings in the ordinary course of equity, and that would mean, when applied to a case like this, that final results once reached by a court of competent jurisdiction over subject-matter and parties will not be disturbed in an equity proceeding between the same parties, except upon a bill which states a case for equitable relief and a case so clear upon the evidence as to show that the results were promoted by fraud, accident, or mistake. Such a construction of section 4915 would place an inventor’s rights in respect to equitable relief from judicial determinations upon the same basis- as general property rights which general rules of equity safeguard only against fraud, accident, or mistake.
The strong language of Morgan v. Daniels, 153 U. S. 120, 14 Sup. Ct. 772, 38 L. Ed. 657, had reference to a decision of the Patent Office, an executive branch of the government, having limited authority to pass upon special facts, and not to the more solemn decision of a court having full jurisdiction on appeal over facts in controversy.
I think, however, that the result of the logic and reasoning of Morgan v. Daniels, though having reference to a decision of the Patent Office, in an executive branch of the government, rather than to a judicial determination, when applied to a case of judicial determination like the one by the Court of Appeals for the District of Columbia, would mean the rule which I have stated, because in the closing paragraph of Mr. Justice Brewer’s opinion it is stated that the testimony was not sufficient to produce a clear conviction that the Patent Office made a mistake.